Intellectual property objects (hereinafter - IP objects) - trademarks, computer programs, geographic Maps, photographs, drawings, advertising texts - meet us everywhere. List of IP objects (in the Civil Code of the Russian Federation they are divided into results intellectual activity and means of individualization) is quite extensive and is given in Article 1225 of the Civil Code. Often there is a need to use these results of intellectual activity or means of individualization. For example, post someone else's photo on your website, release a CD with a set of certain melodies, put an existing one on a product. trademark, put someone's drawing on the cover of a notebook, etc. However, any IP object has its owner (copyright holder). And it is the right holder who owns the exclusive (it is also property) right, which makes it possible to control the use of the IP object and receive income from its use.

Before you start using the IP object you are interested in, you need to find out who owns the property right and conclude an appropriate agreement. Quite often, the copyright holder is the author, but often it can be another person (for example, the author's employer). Several persons can have the exclusive right to an IP object at the same time (for example, co-authors).

The temptation to use the result of intellectual activity without permission is quite strong, but this may entail administrative, civil and criminal liability.

The property right to a particular IP object contains whole line various powers. For example, the exclusive right to objects of copyright includes such powers as reproduction, distribution, import, translation, processing, rental, etc. For example, in order to legally make and sell a copy of a work (for example, books), it is necessary to have reproduction and distribution of the work.

With the help of contracts various shapes it is possible to acquire or obtain for use both all the powers at once, and some of them, it is possible to limit the territory or the period of their use. The contractual form of transfer of exclusive rights protects the interests of both the right holder and the one to whom this right is transferred. Thus, the contract ensures and guarantees the implementation and protection of the property rights of the right holder (and in some cases, the personal non-property rights of the author). The acquirers of exclusive rights, in turn, receive rights that other persons do not have.

Quite often, entrepreneurs themselves, acting as copyright holders (authors) of certain IP objects, are faced with a violation of their exclusive right by other persons. For example, a self-employed photographer, posting his photographs on his own website, risks having them "stolen", that is, used without his permission and payment of remuneration.

In this regard, it is necessary to clearly understand what you can count on as a user of IP objects or their copyright holder, and what kind of contract is better to conclude so that your interests are not affected. Let's try to understand the subtleties various kinds contracts for the disposal of exclusive (property) rights.

Types of agreements on the disposal of exclusive rights

As you know, since January 1, 2008, in connection with the adoption of Part IV of the Civil Code of the Russian Federation, a number of laws regulating legal relations in the field of intellectual property have become invalid. Almost all the provisions of these laws were included in the last part of the Civil Code of the Russian Federation, having undergone major changes. To a large extent, this also applies to agreements on the disposal of the exclusive right to IP objects.

It must be said that in the previously existing "intellectual" laws there were various options agreements on the disposal of the exclusive right to a particular IP object. So, in copyright, such a concept as “author's agreement” was used, and all agreements were divided into agreements on the transfer of exclusive rights and agreements on the transfer of non-exclusive rights. In patent law, relations on the use of IP objects were regulated by an agreement on the transfer of exclusive rights and a license agreement. In other cases, the legislator only mentioned the relevant agreements, without going into their specifics.

Part IV of the Civil Code of the Russian Federation brought the solution of this issue to common denominator, providing single system agreements on the disposal of the exclusive right to any IP objects, whether it be a trademark, photograph, invention or musical composition.

This part of the Civil Code of the Russian Federation consists of a chapter containing general provisions, and chapters on certain objects IP (for example, copyright, patents, trademarks, etc.). The procedure for transferring exclusive rights is contained in the general part and applies to all IP objects.

Thus, the Civil Code of the Russian Federation provides for two main contractual models for disposing of the exclusive right to IP objects:

1. Agreement on the alienation of the exclusive right (Article 1234 of the Civil Code of the Russian Federation). AT this case there is a complete alienation (assignment) of the exclusive right from the right holder to a third party.
2. Conclusion of a license agreement (Article 1235 of the Civil Code of the Russian Federation). In this case, the exclusive right is transferred to a third party only within the limits established by the agreement, while the exclusive right itself remains with the right holder.

In addition, it is possible to single out a third way of disposing of an exclusive right, including:

• a) other possible contracts (for example, a contract of pledge of property rights),
• b) non-contractual methods.

Let's take a closer look at the two main types of contracts.

Collapse Show

Regardless of what kind of contract is concluded, it is prohibited to include in it any conditions that restrict the right of a citizen (author) to create IP objects or the possibility of alienating the exclusive right to them to other persons (i.e. the right to dispose of IP objects that will only be created) (Clause 4, Article 1233 of the Civil Code of the Russian Federation). Such terms of the contract are void, since they unlawfully restrict the legal capacity of a citizen. According to Article 180 of the Civil Code of the Russian Federation, the presence of such conditions in the contract will lead to the recognition of the relevant part of the contract as invalid. This, as a rule, does not lead to the nullity of the contract as a whole.

Another important point: in accordance with paragraph 2 of Art. 1233 of the Civil Code of the Russian Federation, general provisions apply to the agreements contained in the fourth part of the Civil Code of the Russian Federation about transactions(Art. 153-181 of the Civil Code of the Russian Federation), about contracts(Art. 420-453 of the Civil Code of the Russian Federation) and about obligations(Art. 307-419 of the Civil Code of the Russian Federation). An exception to this general rule may be directly established by the Civil Code of the Russian Federation or follow from the content or nature of the exclusive right. For example, paragraph 3 of Article 424 of the Civil Code of the Russian Federation, which establishes the procedure for determining the price of goods, does not apply if the price condition is absent in the contract itself.

Agreement on the alienation (assignment) of the exclusive right

The general rules for this agreement are established by Article 1234 of the Civil Code of the Russian Federation. Under an agreement on the alienation of an exclusive right, one party (right holder) transfers or undertakes to transfer the exclusive right belonging to it in full the other party (the acquirer).

Thus, it is impossible to partially assign or acquire exclusive rights. Moreover, if the agreement itself does not expressly state that the exclusive right is transferred in full, the agreement will be recognized as a license agreement (clause 3, article 1233 of the Civil Code of the Russian Federation).

As follows from the definition, the parties to the contract are referred to as the right holder and the acquirer.

An agreement on the alienation of an exclusive right must be concluded in writing. As for the state registration of the contract, it is mandatory if the IP object, the exclusive right to which is assigned, is also subject to state registration. Thus, inventions, utility models, industrial designs, breeding achievements, trademarks are subject to mandatory registration. Computer programs and databases can be registered at the request of the author, however, if such registration has taken place, then the contract regarding computer programs and databases is subject to registration.

Failure to comply with the written form or the requirement for state registration entails the invalidity of the contract.

Let us note the essential conditions for this agreement.

In accordance with paragraph 1 of Article 432 of the Civil Code of the Russian Federation, the essential terms of any contract are:

1. Conditions on the subject of the contract.
2. Conditions that are named in the law or other legal acts as essential or necessary for contracts of this type.
3. Conditions regarding which, at the request of one of the parties, an agreement must be reached (examples are the conditions for a forfeit, other additional ways of securing obligations; features of the fulfillment of established obligations, etc.).

So, in the text of the treaty, it is necessary first of all to clearly define subject of the contract , i.e. to which particular IP object the exclusive right is assigned.

An essential condition arising from the content of Article 1234 of the Civil Code of the Russian Federation includes remuneration clause(if the contract is onerous).

In this case, the parties are free to decide whether remuneration is paid or not. However, if the contract does not explicitly state that the remuneration is not paid, then such a contract is recognized as compensated. And in the absence of a condition on the amount of remuneration (or the procedure for determining it) in the compensated contract, the contract is considered not concluded (paragraph 2, clause 3, article 1234 of the Civil Code of the Russian Federation).

The remuneration can be paid in the form of:

• lump sum payment;
• royalties (percentage of income received due to the transferred exclusive right);
• combinations of a lump sum and royalties.

The rest of the conditions are not considered essential (unless, of course, there is a statement by one of the parties to the agreement that, in its opinion, any condition is considered essential).

From what moment does the acquirer become the "owner" of the exclusive right?

The exclusive right passes from the right holder to the acquirer:

• a) at the time of concluding an agreement on the alienation of an exclusive right, unless otherwise provided by agreement of the parties (for example, a specific period may be indicated in the agreement);
• b) at the time of state registration of the contract, if the contract is subject to such registration.

Example 1

Collapse Show

An individual entrepreneur creates websites, the exclusive right to design of which he transfers to new copyright holders under an agreement on the alienation of exclusive rights. After the conclusion of the contract, the entrepreneur is not entitled to use the site design either in the portfolio or for any other purposes (both commercial and non-commercial), since the exclusive (property) right passes to the customer. By posting the site design on the Internet, the entrepreneur violates two rights belonging to the new copyright holder - the right to reproduce and the right to the public.

If the acquirer of the exclusive right substantially violates its obligation to pay remuneration to the right holder within the time period established by the agreement, then the former right holder has the right, if the exclusive right has passed to its acquirer:

• demand in judicial order transfer of the rights of the acquirer of the exclusive right (i.e. return of the exclusive right)
• and damages.

According to paragraph 2 of Article 450 of the Civil Code of the Russian Federation, a violation of the contract by one of the parties is recognized as material, which entails such damage for the other party that it is largely deprived of what it was entitled to count on when concluding the contract.

In cases where the violation is not significant, the copyright holder has the right to demand compensation for losses in full (ie actual damage + lost profits).

Suppose the exclusive right has not yet passed to the acquirer. In this case, if he violates the obligation to pay remuneration within the period established by the agreement, the right holder may:

• cancel the contract unilaterally (out of court)
• and demand compensation for damages caused by the termination of the contract.

These are General requirements to agreements on the alienation of exclusive rights. At the same time, the relevant sections of the fourth part of the Civil Code of the Russian Federation include special rules governing the specifics of the conclusion of such agreements in relation to exclusive rights to:

• a work as an object of copyright (Article 1285 of the Civil Code of the Russian Federation);
• objects of related rights (Article 1307 of the Civil Code of the Russian Federation);
• invention, utility model or industrial design (Art. 1365, 1366 of the Civil Code of the Russian Federation);
• selection achievement (art. 1426, 1427 of the Civil Code of the Russian Federation);
• on the topology of an integrated circuit (Article 1458 of the Civil Code of the Russian Federation);
• secret of production - know-how (Article 1468 of the Civil Code of the Russian Federation);
• trademark (Article 1488 of the Civil Code of the Russian Federation);
• single technology (Articles 1547, 1550 of the Civil Code of the Russian Federation).

Please note that it is not allowed to conclude agreements on the alienation of exclusive rights to a company name, commercial designation and appellation of origin. In relation to these IP objects, a ban has also been established on the conclusion of license agreements.

License agreement

The general rules for concluding a license agreement are established by Article 1235 of the Civil Code of the Russian Federation. Thus, the parties to such an agreement are referred to as the licensor (owner of the exclusive right) and the licensee. Under a license agreement, the licensor grants or undertakes to grant the licensee the right to use the IP object. Thus, there is no assignment of exclusive rights and the copyright holder remains the same. Figuratively speaking, the right holder transfers the right to use the IP object “for rent”, while when concluding an agreement on the alienation of an exclusive right, the right holder “sells” his right completely and forever.

Having concluded a license agreement, the licensee will be able to use the IP object only within the limits of those rights and in the ways provided for by the license agreement. In this case, it is not necessary to transfer the right to use in full. You can grant the right to use the IP object in a certain way (for example, print photographs belonging to the licensor in the licensee's brochure), limit the duration of the exclusive right, and / or limit the territory of the use of exclusive rights.

Please note that only the right of use that is expressly specified in the contract is considered transferred. All powers not specified in the agreement remain with the copyright holder (licensor). In the event of a dispute, the arguments of one of the parties that some conditions were implied, but were not spelled out, as well as references to the established practice in the relationship between the parties or business customs will not be taken into account by the court.

In other words, everything that the licensee is not allowed to do under the license agreement is prohibited.

Example 2

A license agreement is concluded in writing and is subject to state registration in the same cases as an agreement on the alienation of exclusive rights. Failure to comply with the written form or the requirement for state registration entails the invalidity of the license agreement.

However, the Civil Code of the Russian Federation provides for the possibility of concluding a license agreement in oral. This exception is made for a license agreement granting the right to use a work in a periodical printed edition(Clause 2, Article 1286 of the Civil Code of the Russian Federation - publishing license agreement).

The essential terms of the license agreement include:

1. Subject of the contract (can be determined by pointing to the IP object, the right to use which is granted under the contract. In this case, it is necessary to indicate the details of the document certifying the right (for example, the number and date of issue of a patent for an invention, a trademark certificate, etc.).
2. Ways to use the IP object.
3. Price condition for a compensated contract. Like the contract for the alienation of an exclusive right, a license agreement can be both paid and free of charge. If the contract does not indicate its gratuitous nature, it is automatically recognized as paid. If at the same time there is no condition on the amount of remuneration (or the procedure for determining it), the contract will be recognized as not concluded.

The license agreement must specify the territory in which the use of IP objects is allowed. If such a territory is not specified, then the licensee has the right to use them throughout the territory of the Russian Federation.

The period for which a license agreement is concluded cannot exceed the period of validity of the exclusive right to an IP object. If the term is not specified in the contract, then the contract is considered concluded for five years.

Territory and term conditions are not essential. In the absence of these conditions in the contract, the relevant provisions of Article 1235 of the Civil Code of the Russian Federation apply (i.e., unless the parties agree otherwise, it will be considered that the right to use the IP object has been transferred for 5 years with the possibility of use throughout the territory of the Russian Federation).

In case of termination of the exclusive right, the license agreement is terminated regardless of the will of the parties (for example, the expiration of the exclusive right has expired).

Let's say the license agreement has expired. Can a former licensee continue to use a particular IP object? Of course, this should not be done, since in this case there is a violation of the exclusive right, which entails property liability provided for by law or contract. Violation of the exclusive right will also take place if, during the validity of the license agreement, the licensee begins to use the IP object in a way not provided for by the agreement, or outside the rights granted to the licensee under the agreement.

Example 3

An individual entrepreneur engaged in publishing activities entered into a license agreement with the copyright holder for the publication of a collection of recipes with a total circulation of 3,000 copies. The publication of a book in a larger circulation than provided for by the contract, in relation to the excess circulation, is a violation of the exclusive right.

So, we have considered the general rules for concluding a license agreement. As in the case of an agreement on the alienation of an exclusive right, licensing agreements for certain IP objects are subject to special rules conclusions. It's about about:

• objects of copyright (Art. 1286, 1287 of the Civil Code of the Russian Federation);
• objects of related rights (Article 1308);
• inventions, utility models or industrial designs (Articles 1367, 1368 of the Civil Code of the Russian Federation);
• breeding achievements (Art. 1428, 1429 of the Civil Code of the Russian Federation);
• topology of an integrated microcircuit (Article 1459 of the Civil Code of the Russian Federation);
• production secrets - know-how (Article 1469 of the Civil Code of the Russian Federation);
• trademarks (Article 1489 of the Civil Code of the Russian Federation);
• unified technology (Article 1550 of the Civil Code of the Russian Federation).

For example, when concluding a license agreement, the subject of which is the use of a trademark, you need to know that the Civil Code of the Russian Federation provides for two mandatory conditions. Firstly, it is necessary to fix in the contract that the quality of the licensee's goods will not be lower than the quality of the goods produced by the licensor, and, secondly, to provide for the possibility (procedure) for the licensor to exercise control over compliance with the first condition.

For the owners of certain IP objects, the conclusion of a license agreement is one of the main forms of extracting material benefits from the possession of exclusive rights, and in some cases the only way to generate income. For example, the right holder cannot or does not want to independently use the registered trademark and transfers it under a license. As for the acquirer of the license, the conclusion of such an agreement is also extremely beneficial for him, since there is no need to spend his own funds on the development of the required IP object or order such development. And the cost of a license will be cheaper than the full purchase of exclusive rights to an IP object.

Types of license agreements

Exist the following types license agreements:

1. Agreement on granting a simple (non-exclusive) license. The licensee is granted the right to use the IP object with the right holder retaining the right to issue licenses to other persons (subclause 1 clause 1 article 1236 of the Civil Code of the Russian Federation). In this case, the right holder (licensor) may enter into a license agreement with third parties on the same method of using the IP object and on the same territory as provided for in the agreement with the licensor.
2. Agreement on granting an exclusive license. The right holder is deprived of the right to issue licenses to other persons (subclause 2, clause 1, article 1236 of the Civil Code of the Russian Federation).
3. "Mixed" agreement, according to which, in relation to various ways use of the IP object, various licenses are “issued” (clause 3 of article 1236 of the Civil Code of the Russian Federation). That is, some uses are designed on the basis of a simple (non-exclusive) license, while others are based on the principle of an exclusive license.

The license is assumed to be simple (non-exclusive), unless the contract expressly provides otherwise. However, it is not necessary to use exactly such definitions in the text of the agreement: “simple license”, “non-exclusive license” or their combination “simple (non-exclusive) license”. The main thing is the essence of the contract, namely, the inclusion in it of a condition that the right holder has the right (or no right) to allow the use of the IP object by third parties in the same ways. In the first case, the license is simple (non-exclusive), in the second - exclusive.

Example 4

Collapse Show

The license agreement provides for the transfer of rights to use the work. At the same time, such powers as reproduction and distribution were transferred under a non-exclusive license, and the right to import a work - under an exclusive license. Accordingly, the copyright holder may issue any number of non-exclusive licenses to reproduce and distribute the work, but only the holder of an exclusive license can import it.

Suppose an exclusive license has been issued, according to which the licensee has begun to use the IP object. Does the right holder retain the right to use the same object in the same ways? IP specialists divided their opinions on this issue into two camps. Some believed that the copyright holder could do this, others, respectively, that they could not. The point in this dispute was put in the resolution of the Plenums of the Armed Forces of the Russian Federation and the Supreme Arbitration Court of the Russian Federation dated March 26, 2009 No. 5/29 “On some issues that arose in connection with the introduction of part four of the Civil Code Russian Federation».

In particular, paragraph 14 of the resolution notes that a license agreement (regardless of the type of such agreement) implies that the right holder retains the right to use the corresponding IP object himself. At the same time, an agreement on an exclusive license may specifically provide that such a right is not reserved for the right holder.

The aforementioned publishing license agreement (Article 1287 of the Civil Code of the Russian Federation) is a peculiar type of license agreements characteristic of objects of copyright. Under this agreement, the publisher (licensor) is granted the right to use the work and, importantly, the obligation to publish this work is assigned to him.

License agreements for computer programs and databases also have their own characteristics. Thus, a license agreement can be concluded by attaching each user to a license agreement, the terms of which are set out on the purchased copy or on the packaging of this copy. The beginning of the use of a computer program or database means the user's consent to the terms of the license agreement.

Performance of the license agreement

It is not enough just to conclude a license agreement, it is necessary to execute it correctly. Thus, a number of requirements for the execution of a license agreement are provided for by Article 1237 of the Civil Code of the Russian Federation.

The licensee is obliged to submit to the right holder reports on the use of IP objects (other provisions may be provided in the contract itself). If such an obligation is included in the agreement, but there are no conditions on the period and procedure for submitting reports, the licensee is obliged to submit reports at the request of the copyright holder.

This obligation is assigned to the licensee, taking into account that the right holder is interested in the proper use of IP objects, since the actions of the licensor can harm both the business reputation of the right holder and his property interests. With the help of timely reports, the right holder will be able to control the actions of the licensee. In addition, such control is also carried out to ensure the right of the right holder to receive remuneration under a license agreement.

Example 5

A condition was included in the license agreement for the publication and distribution of the right holder's book, according to which the right holder has the right to receive more high percentage from sales if the number of copies sold exceeds 8000 pieces. The presence of the report will allow to control the compliance of the licensee with this condition.

As for the obligations of the right holder (licensor), during the term of the license agreement, he is obliged to refrain from any actions that could hinder the licensee from exercising the right granted to him to use the IP object within the limits established by the agreement.

Article 1237 of the Civil Code of the Russian Federation contains a number of special rules aimed at protecting the right holders of works of science, literature or art, and the right holders of related rights in case of violations of the license agreement. Thus, if the licensee fails to fulfill the obligation to pay remuneration under the license agreement, these right holders may unilaterally renounce the license agreement and demand compensation for losses caused by the termination of such an agreement.

Is it possible to conclude an agreement on the alienation of an exclusive right if a license agreement has been concluded? Even if a license agreement has been concluded, the right holder has the right to conclude an agreement with a third party on the alienation of an exclusive right, i.e. assign this right to another person. The consent of the licensee is not required. In this case, the copyright holder (licensor) will simply be replaced, but all the conditions of the previously concluded license agreement remain (clause 7 of article 1235 of the Civil Code of the Russian Federation).

At the same time, the right holder must notify the licensee of the conclusion of such an agreement, since if the licensee was not notified in writing about the transfer of rights to another person, then the risk of adverse consequences caused by the new right holder is borne. For example, the licensee was not aware of the change in ownership and did not provide a report to the new owner. In this situation, the actions of the licensee will be recognized as lawful.

Sublicense agreement

Suppose a license agreement has been concluded. Can the licensee enter into another license agreement and grant the right to use the IP object to a third party? Article 1238 of the Civil Code of the Russian Federation confirms that this is possible and calls such an agreement a sublicense (accordingly, the third party will be called a sublicensee).

In general, the rules of the Civil Code of the Russian Federation on a license agreement are applied to the sublicense agreement, taking into account the following features.

The conclusion of a sublicense agreement is possible only with the written consent of the copyright holder (licensor). The possibility of issuing a sublicense can be provided for in the license agreement (as well as a prohibition on issuing). At the same time, the sublicensee may be granted the rights to use the IP object only within the limits of those rights and methods that are provided for by the license agreement for the licensee.

The term of the sublicense agreement may be less than or equal to the term of the license agreement. If the term exceeds the validity period of the license agreement, the sublicense agreement is considered concluded for the duration of the license agreement.

The licensee shall be liable to the licensor for the actions of the sublicensee, unless otherwise provided by the license agreement.

Compulsory license

In a number of cases expressly provided for by the Civil Code of the Russian Federation, at the request of an interested person, he may be granted the right to use an IP object, the exclusive right to which belongs to another person (compulsory license), at the request of an interested person. The right to use is granted on the terms that must be specified in the court decision (Article 1239 of the Civil Code of the Russian Federation).

A compulsory license can only take place in respect of certain results intellectual activity, but not means of individualization. This implies that the license in this case is simple (non-exclusive), i.e. the right holder has the right to grant the right to use and conclude contracts with other persons.

The cases of granting a compulsory license are specified in articles 1298, 1362, 1405, 1423 of the Civil Code of the Russian Federation. For example, if an invention, utility model or industrial design is not used or insufficiently used by the patent owner within the time limits provided by law, and this leads to an insufficient supply of the relevant goods, works or services on the market, a non-exclusive license can be compulsorily obtained by any person who is willing and ready to use such an object (clause 1, article 1362).

Other ways of disposing of the exclusive right

Option one: conclusion of other types of contracts

The agreements discussed above are the most common ways of disposing of an exclusive right. However, there are other treaties that provide for the transfer of exclusive rights. For example, an agreement on the pledge of exclusive rights (Clause 5, Article 1233 of the Civil Code of the Russian Federation), an agreement concluded on the basis of an open license (Article 1368 of the Civil Code of the Russian Federation), an agreement on ordering the creation of an IP object (Articles 1288-1290, 1296, 1372, 1431 Civil Code of the Russian Federation).

Option two: transfer of exclusive right without a contract

In some cases, the transfer of an exclusive right to other persons is possible without concluding an agreement with the copyright holder. Such a transition occurs automatically and no remuneration is paid to the copyright holder.

In particular, according to Article 1241 of the Civil Code of the Russian Federation, such a transition is allowed:

1. By way of universal succession.

Universal succession takes place in the following cases:

• a) inheritance after the death of the right holder citizen,
• b) reorganization of a legal entity. According to article 57 of the Civil Code of the Russian Federation, the reorganization of a legal entity can be carried out in the form of a merger, accession, division, separation and transformation.

When foreclosing on the property of the right holder.

When levying execution on the property of the right holder, the non-contractual transfer of exclusive rights is possible due to the fact that the exclusive (it is also property) right is integral part this property.

The requirements in accordance with which collection must be carried out, contains the federal law dated July 21, 1997 No. 119-FZ “On Enforcement Proceedings”. As Article 46 of this Law provides, foreclosure on the debtor's property consists of the seizure of property (inventory), seizure, compulsory license. The order of enforcement actions depends on the category of the debtor (legal or individual).

In other cases provided by law.

An example of such cases is the technology transfer rule (Article 1547 of the Civil Code of the Russian Federation).

The results of intellectual activity and means of individualization are widely used for profit. Yes, the authors musical works can allow others to use their music for money. Why can't other citizens, for example, take a song and play it in the background on their video? This is because the owner of the music has the exclusive right to this object, and everyone else does not. It, as we found out (see), and implies the possibility of using the work in any way within the framework of the law. Therefore, other persons are maximally interested in obtaining it.

Ways of transferring an exclusive right

Before delving into the consideration of specific methods, we draw the reader's attention to the fact that of all the groups of intellectual rights (you can familiarize yourself with them), only the exclusive can be transferred from one person to another. The rest are inalienable: for example, if A. Bell invented the telephone, then this right of authorship remains with him forever: neither his heirs nor other persons can be considered authors.

We also recall that the exclusive right is valid for a certain period, therefore, only during this time period it can be transferred to other persons. For example, an object such as a work can be used during the life of the author and for seventy years after his death. After this period, legal protection and, accordingly, the exclusive right cease, the work becomes public property.

So, the Civil Code of the Russian Federation provides for two ways of transition: non-contractual and contractual. Let's consider them in more detail.

non-contractual way

Since the exclusive right is an object of civil rights (see Article 128 of the Civil Code of the Russian Federation), such civil law institutions as inheritance and reorganization of a legal entity are applied to it.

Inheritance is a legal relationship that arises at the time of the death of the testator and involves the transfer of all the property of the deceased to his heirs. Being included in the list of Article 128 of the Civil Code of the Russian Federation, the exclusive right is inherited in general order. So, after the death of the author of a work, it passes to his heirs, which means that the latter will be able to use this work for a limited period (seventy years).

The reorganization of a legal entity involves the creation of a new legal entity as a result of a merger, accession, division, separation, transformation. In this case, the newly created legal entity will have exclusive rights. So, for example, when two joint-stock companies merge into one, the new entity is considered the owner of, for example, a commercial designation and a trademark.

Negotiated way

Here, the basis is a contract for the right to use intellectual property, by virtue of which one party transfers an exclusive right to another, and the other, as a rule, undertakes to pay an appropriate fee.

Today, Russian legislation provides for two such agreements: a license agreement and an agreement on the alienation of an exclusive right. Both contractual structures involve the transfer of intellectual property rights, but they have significant differences. Let's consider in more detail.

License agreement on the transfer of intellectual property rights

It seems that everyone has come across this agreement at least once in their life, and even more: many have also personally concluded it. Installing computer game, we check the box that we agree with the license agreement, thereby agreeing with everything that is said there. Such agreements outline the limits of the use of the intellectual property object (video game): in general, we transfer the right to use the game only for personal purposes, and it is prohibited to distribute copies of it.

The parties to the license agreement are the licensor (right holder) and the licensee (the one who accepts the rights to the object). The main requirements are set out in Article 1235 of the Civil Code of the Russian Federation, let's pay attention to the most important among them:

1. Mandatory written form;
2. Registration of the transfer of rights in cases where this right initially needed registration (for example, in the field of patent law);
3. The possibility of concluding an agreement for a period that does not exceed the period of validity of the exclusive right to the object of intellectual rights;
4. If the exclusive right is terminated, the contract is automatically terminated;
5. By general rule is reimbursable (i.e., the licensee must pay a fee), although gratuitousness can also be envisaged;
6. Mandatory conditions are: the subject of the contract (ie the right that will be transferred to the licensee), as well as ways of using the intellectual property object;
7. The exclusive right, despite the transfer, remains with the licensor (right holder).

Alienation of intellectual property rights

This construction is regulated by Article 1234 of the Civil Code of the Russian Federation. In general, the conditions are similar to the terms of a license agreement, but there is a significant difference: here the rights are always transferred, firstly, in full, and secondly, the copyright holder simultaneously loses them. Of course, within the framework of license agreements there is such a thing as an exclusive license, under which rights can be transferred in full (see Article 1236 of the Civil Code of the Russian Federation), however, the second sign (complete alienability) is in no case typical for license agreements.

Thus, under a license agreement, the licensor retains rights (for example, the patent owner can either dispose of his invention himself or allow other persons who have concluded the agreement to use it).

In the case of an alienation agreement, the rights in full are transferred definitively to another person. Quite often, this method is used, for example, when transferring rights to a trademark and service mark.

The procedure for the transfer of exclusive rights under contracts

The author of the result of intellectual activity is the bearer of property and personal non-property rights. Personal non-property rights are inseparable from the personality of the author. Their transfer or transfer to another person is not allowed. Unlike them, the transfer of property rights from the right holder to another person is possible. The author has the right to dispose of RIA at his own discretion. The main authority of the author is the right to use or allow other persons to use RIA. The right holder may exercise this right personally or through special organizations. If the right holder personally transfers the rights to use RIA, then this transition is carried out:

From an employee to an employer, if the result of intellectual activity is obtained in the course of performing official duties or an official assignment on the basis of employment contract or order;

From the contractor to the customer of the Russian Federation, the subject of the Russian Federation or the municipality on the basis of the State or municipal contract;

From the testator to the heirs - in the order of hereditary succession on the basis of the Certificate of the right to inheritance.

The Civil Code of the Russian Federation distinguishes the following types of civil law contracts:

Contract of alienation of exclusive rights;

license agreements;

sublicensing agreements.

According to Article 1233 of the Civil Code of the Russian Federation, the right holder may assign his rights or transfer them temporarily. Assignment of rights occurs by their alienation in full under an agreement on the alienation of an exclusive right, and temporary transfer by granting the right to use the result of intellectual activity to another person within certain limits established by a license agreement.

Civil law contracts.

Under an agreement on the alienation of an exclusive right, the author or right holder, in accordance with Article 1234 of the Civil Code of the Russian Federation, is a party to the agreement. He is obliged to transfer in full the exclusive right to the result of intellectual activity. The other party to the contract is the acquirer of the right. To the contract on the alienation of the exclusive right, the law provides certain requirements:

The contract is concluded in writing;

The contract is subject to state registration in cases stipulated by the Civil Code of the Russian Federation. If the contract is subject to state registration in the case when the result of intellectual activity is subject to state registration, then the transfer of exclusive rights from the right holder to the acquirer occurs at the time of its state registration. And if the contract is not subject to state registration, then the transfer of exclusive rights occurs at the time of the conclusion of the contract, unless otherwise provided by agreement of the parties;

The contract is paid, unless otherwise provided by agreement of the parties. The essential terms of the compensated contract are the terms on the amount of remuneration or on the procedure for its determination. Otherwise, the contract is considered not concluded. In the event of non-payment of remuneration fixed time provided that the exclusive right has passed to the acquirer, the right holder has the right to demand in court the transfer of the rights of the acquirer and compensation for losses. If the exclusive right has not been transferred to the acquirer, then the right holder has the right to unilaterally withdraw from the contract and demand compensation for losses.

Failure to comply with one of these requirements entails the recognition of the contract as invalid.

Agreements on the alienation of exclusive rights have features that depend on the characteristics of the object of intellectual property. Such objects include computer programs, databases, know-how (secrets of production), inventions, utility models, industrial designs.

Agreements on the alienation of the exclusive right to a registered computer program and database are subject to State registration with the Federal Executive Authority for Intellectual Property. Information about the change in the owner of the exclusive right is entered into the state registers of computer programs or databases on the basis of a registered agreement or other document of title. This information is published in the official bulletin of the said Federal body.

Agreements on the alienation of the exclusive right to know-how contain the obligation of the right holder to keep the secret of production confidential for the entire duration of the exclusive right until its termination.

Alienation or transfer of the exclusive right to a trade name, to an appellation of origin of goods to another person is not allowed.

Agreements on the alienation of the patent for the result technical creativity(invention, utility model, industrial design) occurs by attaching a statement to the documents of an application for a patent. In the application, the applicant must notify his consent to conclude an agreement on the alienation of a patent with any Russian legal entity or individual who first expressed a desire by notifying the patent owner and the Federal Service for Intellectual Property, Patents and Trademarks (Rospatent). In the presence of the said application, patent fees are not collected. The federal agency publishes information about the application in its official bulletin. In order to transfer the exclusive right to the result of technical creativity from the patent owner to another person, a patent alienation agreement is concluded. The agreement is subject to registration with the Federal Service for Intellectual Property.

License agreements and their types.

The right holder may dispose of his exclusive right to the result of intellectual activity not only in the order of its alienation, but by transferring individual powers to other persons in order to use such a result. For this purpose, a license agreement is concluded, in which the owner of the exclusive right is the licensor, and the recipient of this right is the licensee. The conclusion of a license agreement does not entail the transfer to the licensee of the exclusive right. In addition, if the contract does not expressly state that the exclusive right is transferred in full, then the contract is considered to be a licensed one.

The exception is the result of intellectual activity, specially created for inclusion in a complex object (clause 1, article 1240). In this case, the right to use the result of intellectual activity belongs to the person who organized the creation of such an object. An agreement with him is considered an agreement on the alienation of an exclusive right, unless otherwise provided by agreement of the parties.

Under a license agreement, the licensor grants the licensee the right to use the result of intellectual activity. During the validity of the license agreement, the obligations of the parties established in the agreement are implemented. The licensor is obliged to refrain from actions that impede the fulfillment of the licensee's obligations under the agreement, and the licensee is obliged to provide reports on the use of the result of intellectual activity. The transfer of an exclusive right to a new right holder is not a basis for termination, termination or amendment of the license agreement.

The essential terms of the license agreement are:

subject of the license agreement. The subject of the contract is the result of intellectual activity, for which the right to use is granted;

The list and limits of the transferred rights, while the unspecified right is considered not granted;

Ways of use, i.e. indication of the territory of use. If the territory is not specifically indicated, then the right to use this result of intellectual activity extends to the entire territory of the Russian Federation;

Form and amount of remuneration. Remuneration payments can be in the form of fixed, one-time, periodic payments, as well as in the form of percentages of income or otherwise. Minimum royalty rates per use certain types the results of intellectual activity are established by the Government of the Russian Federation;

The date of commencement of the use of the result of intellectual activity. The term of a license agreement may not exceed the term of the exclusive right to given result intellectual activity. Termination of the exclusive right to the result of intellectual activity automatically entails the termination of the license agreement. If the term is not specified in the contract, then the contract is considered concluded for five years, unless the Civil Code of the Russian Federation provides otherwise.

In relation to some objects of intellectual property, the legislation of the Russian Federation establishes the specifics of granting the right to use them.

Granting the right to use a computer program and a database is allowed by concluding a user license agreement with the relevant right holder, under the so-called accession agreement. The terms of such an agreement are set out on the packaging of a copy of the program or database. The beginning of the use of the program or base means consent to the conclusion of a license agreement and the beginning of its operation.

The granting of the right to use a work occurs under an agreement between the copyright holder and the publisher under the so-called publishing license agreement. The licensee (publisher) is obliged to publish the work, i.e. start using it no later than the period specified in the contract. If the term is not specified in the contract, then the rule on terms comes into force, providing for the termination of the contract in accordance with Article 459 of the Civil Code of the Russian Federation. If this condition is violated, the licensor (right holder) has the right to withdraw from the contract without compensation to the licensee (purchaser of the right) for losses. In case of termination of the publishing license agreement for other reasons, the licensor has the right to demand payment of remuneration in full.

Russian legislation in the field of intellectual property distinguishes several types of license agreements. The conclusion of a license agreement gives rise to the right of the licensee to perform the actions specified in the license issued by the licensor. If the licensor (copyright holder) reserves the right to issue licenses to other persons, then, in this case, the licensee is granted a simple non-exclusive license. If the licensor transfers to the licensee the rights to issue licenses to other persons, then the licensee is issued a so-called exclusive license.

An exclusive license gives the licensee the right to conclude, with the written consent of the licensor, sublicensing agreements under which the licensee grants the right to use the result of intellectual activity to another person (clause 1 of article 1238 of the Civil Code of the Russian Federation). In sublicensing agreements, the right to use is established only within the limits of those rights, methods and terms of use that are provided for by the license agreement for the licensee. A sublicense agreement concluded for a longer period than the license agreement is considered concluded for the duration of the license agreement.

If the licensee has not received written consent to conclude a sublicense agreement, then such a right can be granted by the court under the so-called compulsory license.

Russian legislation establishes the specifics of granting the right to use the result of intellectual activity under a license. This, first of all, applies to patent holders, as the primary right holders of the rights to the result of technical creativity, certified by a patent. The patent owner may grant the right to use an invention, utility model and industrial design on the basis of a simple non-exclusive license granted to any person, or on the basis of a compulsory simple non-exclusive license.

To issue a simple non-exclusive license, the patent owner must submit an application to the Federal Service for Intellectual Property about the possibility of granting an open license. federal Service publishes in the official bulletin, at the expense of the applicant, information about the open license, indicating its conditions. If such an application is submitted, the patent fee for maintaining a patent is reduced by 50 percent, starting from the year following the year of publication of information on the basis of Article 1367 of the Civil Code of the Russian Federation.

The issuance of a compulsory simple non-exclusive license is possible on the basis of a court decision, which is taken in accordance with Article 1362 of the Civil Code of the Russian Federation in the following cases:

If the patent holder has not sufficiently used the invention and industrial design for four years, and the utility model for three years, which led to a decrease in demand and supply in the market for goods, works and services;

If the patent owner refuses to conclude a license agreement with persons wishing to use this result of technical creativity.

A person who is ready to use the result of technical creativity may apply to the court with a claim against the patent owner for a compulsory simple non-exclusive license to use an invention, utility model and industrial design on the territory of the Russian Federation. The statement of claim must indicate the conditions proposed by the plaintiff, which include information on the amount of use of the result of technical creativity, the amount, procedure and timing of payments. In response to these claims, the patent owner must prove the validity of the reasons for his actions. The court, having examined all the circumstances of the case, makes a decision on granting a compulsory license with the specified conditions. The Federal Service for Intellectual Property carries out state registration of a compulsory simple non-exclusive license based on a court decision.

The court may refuse to satisfy the plaintiff's claims if it is established that the patent owner cannot use his result of technical creativity without violating the rights of the owner of another patent who refuses to conclude a license agreement. In this case, the patent holder of the dependent result of technical creativity must prove that its object is an important technical achievement, has significant economic advantages, and that the proposed conditions would help to avoid violation of his rights as the patent holder of the main result of technical creativity.

The validity of a compulsory license may be terminated in court at the suit of the patent owner, if the circumstances of its issuance have disappeared. The court establishes the term and procedure for the termination of its validity and the rights arising in connection with its receipt.

Thus, the author (copyright holder) can dispose of his rights to the result of intellectual activity by concluding civil law contracts. If the right holder transfers the rights to use the result of intellectual activity in full, then an agreement on the alienation of the exclusive right is concluded. If only part of the powers is transferred, then it is a license agreement. License agreements can be of three types. Under one contract, the acquirer is issued a simple non-exclusive license. Under another agreement, the acquirer is issued an exclusive license, according to which he can transfer the rights to use the result of intellectual activity to third parties, conclude sublicensing agreements. In addition, use rights may be granted by court order based on a court decision to issue a compulsory simple non-exclusive license.

Transfer of exclusive rights under employment contracts.

The author has the right to dispose of the already created result of intellectual activity under civil law agreements on the alienation of exclusive rights or under license agreements, transferring part of his rights to the result of intellectual activity. RIA can be created not only at the request of the author, but also on the basis of orders placed by individuals and legal entities, employers, state and municipal authorities.

The author can dispose of the rights to his RIA, which he will create in the future under an order agreement or in the process of performing his labor activity. The types of agreement under which RIA will be created depend on the type of intellectual property object being created and on the recognition of its protectability by one or another institution of intellectual property law (copyright, related rights, patent law, the right to non-traditional objects of intellectual activity and the right to means of individualization) .

A work of science, literature and art, as objects of copyright, can be created under an agreement between the author and the customer, who are parties to the agreement, under the so-called copyright order agreement or copyright agreement (Article 1288 of the Civil Code of the Russian Federation). The author undertakes to create a work and transfer to the customer the material carrier of the work in ownership or, by agreement of the parties, for temporary use on a reimbursable basis.

Alienation of the exclusive right to intellectual property on the basis of the norms of the Civil Code of the Russian Federation on agreements on the alienation of exclusive rights;

Granting the right to use RIA in accordance with license agreements within the established limits and applying the provisions of the Civil Code of the Russian Federation.

If the contract does not provide or does not allow to determine this period, then the contract is considered not concluded;

The customer has the right to unilaterally withdraw from the contract of author's order:

b) if the author has not completed the work after the expiration of the grace period granted to him in case of violation of the main period for good reasons. An additional grace period is equal to ¼ of the main period, unless the agreement of the parties provides for its increase or decrease.

In case of non-fulfillment or improper fulfillment of the contract of the author's order, in accordance with clause 2 of article 1290 of the Civil Code of the Russian Federation, the author is responsible and obliged:

Return the advance to the customer;

Pay the penalty, if it is provided for in the contract.

However, the total amount of payments is limited to the amount of actual damage caused to the customer.

Thus, the result of literary and artistic creativity can be created by order on the basis of an author's order agreement (author's agreement).

An inventor may create a PTT in connection with the performance of:

Their job duties on the basis of an employment contract concluded by the employer and the employee - the inventor, which provides for the creation of RIA;

A specific task of the employer on the basis of an agreement - a contract;

Their work duties, which did not provide for the creation of RIA.

An invention, utility model or industrial design created by an employee in connection with the performance of his job duties or a specific task of the employer are recognized as a service invention, service utility model or service industrial design, respectively (Article 1370 of the Civil Code of the Russian Federation).

Right of authorship for a service invention(utility model or industrial design) belongs to the employee (author). Exclusive right to official PTT and the right to obtain a patent belong to the employer, unless otherwise provided by the labor or other contract between the employee and the employer.

In the absence of an agreement between the employer and the employee, the employee must notify the employer in writing of the creation of an RTT in connection with the performance of his/her job duties or a specific assignment by the employer of such a result for which legal protection is possible.

If the employer, within four months from the date of notification by the employee:

Will not file an application for a patent for the corresponding PTT with the federal executive authority for intellectual property;

If he does not transfer the right to obtain a patent for PTT to another person or does not inform the employee about keeping information about the corresponding RIA secret, then the right to obtain a patent for such PTT belongs to the employee.

In this case, the employer, during the term of the patent, has the right to use the official PTT in his own production on the terms of a simple (non-exclusive) license with payment to the patent owner compensation, the amount, conditions and procedure for payment of which are determined by the agreement between the employee and the employer, and in the event of a dispute - by the court.

If the employer:

Obtain a patent for a service invention (utility model or industrial design);

Either decides to keep information about such PTTs secret and informs the employee about it;

Or transfer the right to obtain a patent to another person;

Or does not receive a patent on the application filed by him for reasons depending on him, then the employee has the right to remuneration. The amount of remuneration, the conditions and procedure for its payment by the employer are determined by the agreement between him and the employee, and in the event of a dispute - by the court.

PTTs created by an employee using the employer's financial, technical or other material resources, but not in connection with the performance of their job duties or a specific task of the employer, are not official.

The right to obtain a patent and the exclusive right to such PTTs belong to the employee. In this case, the employer has the right, at his choice, to demand:

Granting him a gratuitous simple (non-exclusive) license to use the created RIA for his own needs for the entire duration of the exclusive right;

Or reimbursement of expenses incurred by him in connection with the creation of such RTTs.

Transfer of exclusive rights under the state and municipal contract.

The results of intellectual activity can be created by order of state or municipal authorities under a state or municipal contract. Such RIA should be created for state or municipal needs. The parties to the contract (agreement) are:

The customer acting on behalf of the Russian Federation, subjects of the Russian Federation or municipality;

The exclusive right to a work of science, literature or art created under a state or municipal contract may belong to various persons, namely:

the Russian Federation, a constituent entity of the Russian Federation or a municipality;

Contractor;

Jointly (clause 1 of article 1298 of the Civil Code of the Russian Federation):

Contractor and the Russian Federation;

To the Contractor and the subject of the Russian Federation;

Contractor and municipality.

If the exclusive right belongs to the Russian Federation, a constituent entity of the Russian Federation or a municipality, the performer is obliged to acquire all rights or ensure their acquisition for transfer to the respective public entities. To this end, the contractor concludes relevant agreements with its employees and third parties. At the same time, he has the right to reimbursement of expenses incurred by him in connection with the acquisition of the relevant rights from third parties (clause 2, article 1298 of the Civil Code of the Russian Federation).

If the exclusive right belongs to the performer or other right holder, then at the request of the customer, he is obliged to provide the person indicated by him with a free simple (non-exclusive) license to use the corresponding RIA for state or municipal needs (clause 3 of article 1298 of the Civil Code of the Russian Federation).

If the exclusive right belongs jointly to the contractor and the Russian Federation, the contractor and the constituent entity of the Russian Federation, or the contractor and the municipality, then the state or municipal customer has the right to grant a free simple (non-exclusive) license to use such RIA to third parties, notifying the contractor about this (clause 4 of Art. 1298 of the Civil Code of the Russian Federation).

PTT can also be created when performing work under a state or municipal contract for state or municipal needs.

The right to obtain a patent and the exclusive right to an invention, utility model or industrial design (invention):

Belong to an organization fulfilling a state or municipal contract (performer), unless the contract provides otherwise;

They belong jointly to the contractor and the Russian Federation, the contractor and the subject of the Russian Federation, or the contractor and the municipality (Article 1373 of the Civil Code of the Russian Federation);

Belong to the Russian Federation, a constituent entity of the Russian Federation or a municipality. In this case, the customer may file an application for a patent within six months from the date of his written notification by the executor of the receipt of RIA capable of legal protection as an invention. If the customer does not file an application within the specified period, the right to obtain a patent belongs to the performer. In addition, the performer is obliged, by concluding appropriate agreements with his employees and third parties, to acquire all rights or to ensure their acquisition for transfer, respectively, to the Russian Federation, the subject of the Russian Federation and the municipality. At the same time, the performer has the right to reimbursement of expenses incurred by him in connection with the acquisition of the relevant rights from third parties.

If a patent for an invention does not belong to the Russian Federation, not to a constituent entity of the Russian Federation or not to a municipal formation, then the patent owner, at the request of the customer, is obliged to provide the person indicated by him with a free simple (non-exclusive) license to use the PTT for state or municipal needs.

If a patent is obtained jointly in the name of the contractor and the Russian Federation, the contractor and the constituent entity of the Russian Federation, or the contractor and the municipality, then the customer has the right to grant a free simple (non-exclusive) license to use such PTT in order to perform work or supply products for state or municipal needs, notifying about this artist.

If the performer who has received a patent in his own name decides to terminate the patent early, he is obliged to notify the state or municipal customer about this and, at his request, transfer the patent free of charge to the Russian Federation, a constituent entity of the Russian Federation or a municipality.

In the event of a decision on the early termination of a patent received in the name of the Russian Federation, a constituent entity of the Russian Federation or a municipality, the customer is obliged to notify the contractor about this and, at his request, transfer the patent to him free of charge.

LEGAL PROTECTION OF INTELLECTUAL RIGHTS

The concept and signs of exclusive rights

Definition 1

The exclusive right to an object of intellectual activity recognizes the possibility of using such an object in any way not prohibited by law, as well as at its own discretion to allow the use of an object of intellectual property by other persons.

An analysis of the exclusive right and other types of intellectual rights allows us to conclude that the property content is characteristic only of exclusive rights. So, the right in question can itself be in civil circulation, acting as the subject of a transaction (for example, a contract of sale), acting as a way to secure this or that obligation (for example, being pledged), etc.

In addition, the current civil legislation allows for the possibility of transferring the exclusive right to the subject of civil circulation for a certain period of time or the complete alienation of the exclusive right. In the first case, the corresponding transfer is carried out, for example, within the framework of a license agreement, in the second case, under an agreement on the alienation of an exclusive right. The procedure for concluding, the specifics of the content and execution of the relevant agreements are provided for by the current civil legislation.

As a general rule, the possibility of using an object of intellectual property at one’s own discretion is limited to a certain period, thus, another feature is characteristic of an exclusive right - an urgent one. At the same time, this feature is not absolute, since the current legislation contains a number of exceptions in the field of the period of protection of exclusive rights, for example, by virtue of the norm of Art. 1508 of the Civil Code of the Russian Federation establishes perpetual legal protection of a well-known trademark

Thus, the analysis of the content of exclusive rights to the results of intellectual activity makes it possible to single out the following main features of such a right: property content; The ability to independently act in civil circulation, by transferring to certain period or complete alienation; * Urgent nature of the exclusive right (as a general rule).

Features of exclusive rights of certain types of intellectual property

The exclusive right to works and computer programs equated to them is valid throughout the life of the author and seventy years after his death. Thus, the author throughout his life, and his heirs for seventy years, can legally use the work. At the same time, in relation to objects of copyright created in co-authorship, the duration of the exclusive right is equal to the life of the co-author who died after all others, plus seventy years from the year following the year of his death.

Objects of related rights.

• performance: during the life of the author (but not less than 50 years);
• phonograms, radio and television programs: 50 years;
• database: 15 years, with the exclusive right held by the database manufacturer;
• publication: the exclusive right of the publisher is protected for 25 years from the date of publication of the relevant work;

1. Objects of industrial property.

   Comparison of the duration of the exclusive rights of objects of copyright, objects of related rights and objects of industrial property allows us to conclude that the latter have the shortest duration. This situation is explained, among other things, by the fact that the field of invention is a very dynamic category, technologies are constantly changing and improving, in this regard, the excessive duration of protection, and the corresponding ability of the inventor to receive remuneration for his invention or discovery for longer than a reasonable period, would act as an obstacle to development scientific and technological progress. In this regard, the legislator has established the following terms of protection.

The list of IP objects (in the Civil Code of the Russian Federation they are divided into the results of intellectual activity and means of individualization) is quite extensive and is given in Article 1225 of the Civil Code. Often there is a need to use these results of intellectual activity or means of individualization. For example, post someone else's photo on your website, release a CD with a set of certain melodies, put an existing trademark on a product, put someone's drawing on the cover of a notebook, etc. However, any IP object has its owner (right holder). And it is the right holder who owns the exclusive (it is also property) right, which makes it possible to control the use of the IP object and receive income from its use.

Before you start using the IP object you are interested in, you need to find out who owns the property right and conclude an appropriate agreement. Quite often, the copyright holder is the author, but often it can be another person (for example, the author's employer). Several persons can have the exclusive right to an IP object at the same time (for example, co-authors).

The temptation to use the result of intellectual activity without permission is quite strong, but this may entail administrative, civil and criminal liability.

The property right to a particular IP object contains a number of different powers. For example, the exclusive right to objects of copyright includes such powers as reproduction, distribution, import, translation, processing, rental, etc. For example, in order to legally make and sell a copy of a work (for example, books), it is necessary to have reproduction and distribution of the work.

With the help of contracts of various forms, it is possible to acquire or obtain for use both all the powers at once, and some of them, it is possible to limit the territory or the period of their use. The contractual form of transfer of exclusive rights protects the interests of both the right holder and the one to whom this right is transferred. Thus, the contract ensures and guarantees the implementation and protection of the property rights of the right holder (and in some cases, the personal non-property rights of the author). The acquirers of exclusive rights, in turn, receive rights that other persons do not have.

Quite often, entrepreneurs themselves, acting as copyright holders (authors) of certain IP objects, are faced with a violation of their exclusive right by other persons. For example, a self-employed photographer, posting his photographs on his own website, risks having them "stolen", that is, used without his permission and payment of remuneration.

In this regard, it is necessary to clearly understand what you can count on as a user of IP objects or their copyright holder, and what kind of contract is better to conclude so that your interests are not affected. Let's try to understand the intricacies of various types of contracts for the disposal of exclusive (property) rights.

Types of agreements on the disposal of exclusive rights

As you know, from January 1, 2008, in connection with the adoption of part IV Civil Code of the Russian Federation a number of laws regulating legal relations in the field of intellectual property have lost force. Almost all the provisions of these laws were included in the last part of the Civil Code of the Russian Federation, having undergone major changes. To a large extent, this also applies to agreements on the disposal of the exclusive right to IP objects.

It must be said that in the previously existing "intellectual" laws, there were various versions of agreements on the disposal of the exclusive right to a particular IP object. So, in copyright, such a concept as “author's agreement” was used, and all agreements were divided into agreements on the transfer of exclusive rights and agreements on the transfer of non-exclusive rights. In patent law, relations on the use of IP objects were regulated by an agreement on the transfer of exclusive rights and a license agreement. In other cases, the legislator only mentioned the relevant agreements, without going into their specifics.

Part IV of the Civil Code of the Russian Federation brought the solution of this issue to a common denominator, providing for a unified system of agreements on the disposal of the exclusive right to any IP objects, whether it be a trademark, photograph, invention or musical composition.

This part of the Civil Code of the Russian Federation consists of a chapter containing general provisions and chapters devoted to certain IP objects (for example, objects of copyright, patents, trademarks, etc.). The procedure for transferring exclusive rights is contained in the general part and applies to all IP objects.

Thus, the Civil Code of the Russian Federation provides for two main contractual models for disposing of the exclusive right to IP objects:

1. Agreement on the alienation of the exclusive right (Article 1234 of the Civil Code of the Russian Federation). In this case, there is a complete alienation (assignment) of the exclusive right from the right holder to a third party.
2. Conclusion of a license agreement (Article 1235 of the Civil Code of the Russian Federation). In this case, the exclusive right is transferred to a third party only within the limits established by the agreement, while the exclusive right itself remains with the right holder.

In addition, it is possible to single out a third way of disposing of an exclusive right, including:

a) other possible contracts (for example, a contract of pledge of property rights),
b) non-contractual methods.

Let's take a closer look at the two main types of contracts.

Reference

Regardless of what kind of contract is concluded, it is prohibited to include in it any conditions that restrict the right of a citizen (author) to create IP objects or the possibility of alienating the exclusive right to them to other persons (i.e. the right to dispose of IP objects that will only be created) (Clause 4, Article 1233 of the Civil Code of the Russian Federation). Such terms of the contract are void, since they unlawfully restrict the legal capacity of a citizen. According to Article 180 of the Civil Code of the Russian Federation, the presence of such conditions in the contract will lead to the recognition of the relevant part of the contract as invalid. This, as a rule, does not lead to the nullity of the contract as a whole. Another important point: in accordance with paragraph 2 of Art. 1233 of the Civil Code of the Russian Federation, general provisions apply to the agreements contained in the fourth part of the Civil Code of the Russian Federation about transactions(Art. 153-181 of the Civil Code of the Russian Federation), about contracts(Art. 420-453 of the Civil Code of the Russian Federation) and about obligations(Art. 307-419 of the Civil Code of the Russian Federation). An exception to this general rule may be directly established by the Civil Code of the Russian Federation or follow from the content or nature of the exclusive right. For example, paragraph 3 of Article 424 of the Civil Code of the Russian Federation, which establishes the procedure for determining the price of goods, does not apply if the price condition is absent in the contract itself.

Agreement on the alienation (assignment) of the exclusive right

The general rules for this agreement are established by Article 1234 of the Civil Code of the Russian Federation. Under an agreement on the alienation of an exclusive right, one party (right holder) transfers or undertakes to transfer the exclusive right belonging to it in full the other party (the acquirer).

Thus, it is impossible to partially assign or acquire exclusive rights. Moreover, if the agreement itself does not expressly state that the exclusive right is transferred in full, the agreement will be recognized as a license agreement (clause 3, article 1233 of the Civil Code of the Russian Federation).

As follows from the definition, the parties to the contract are referred to as the right holder and the acquirer.

An agreement on the alienation of an exclusive right must be concluded in writing. As for the state registration of the contract, it is mandatory if the IP object, the exclusive right to which is assigned, is also subject to state registration. Thus, inventions, utility models, industrial designs, breeding achievements, trademarks are subject to mandatory registration. Computer programs and databases can be registered at the request of the author, however, if such registration has taken place, then the contract regarding computer programs and databases is subject to registration.

Failure to comply with the written form or the requirement for state registration entails the invalidity of the contract.

Let us note the essential conditions for this agreement.

In accordance with paragraph 1 of Article 432 of the Civil Code of the Russian Federation, the essential terms of any contract are:

1. Conditions on the subject of the contract.
2. Conditions that are named in the law or other legal acts as essential or necessary for contracts of this type.
3. Conditions regarding which, at the request of one of the parties, an agreement must be reached (examples are the conditions for a forfeit, other additional methods of securing obligations; features of the fulfillment of established obligations, etc.).

So, in the text of the treaty, it is necessary first of all to clearly define subject of the contract , i.e. to which particular IP object the exclusive right is assigned.

An essential condition arising from the content of Article 1234 of the Civil Code of the Russian Federation includes remuneration clause(if the contract is onerous).

In this case, the parties are free to decide whether remuneration is paid or not. However, if the contract does not explicitly state that the remuneration is not paid, then such a contract is recognized as compensated. And in the absence of a condition on the amount of remuneration (or the procedure for determining it) in the compensated contract, the contract is considered not concluded (paragraph 2, clause 3, article 1234 of the Civil Code of the Russian Federation).

The remuneration can be paid in the form of:

- one-time payment;
- royalties (percentage of income received due to the transferred exclusive right);
- Combinations of lump-sum payment and royalties.

The rest of the conditions are not considered essential (unless, of course, there is a statement by one of the parties to the agreement that, in its opinion, any condition is considered essential).

From what moment does the acquirer become the "owner" of the exclusive right?

The exclusive right passes from the right holder to the acquirer:

a) at the time of concluding an agreement on the alienation of an exclusive right, unless otherwise provided by agreement of the parties (for example, a specific period may be indicated in the agreement);

b) at the time of state registration of the contract, if the contract is subject to such registration.

Example 1

If the acquirer of the exclusive right substantially violates its obligation to pay remuneration to the right holder within the time period established by the agreement, then the former right holder has the right, if the exclusive right has passed to its acquirer:

- demand in court the transfer of the rights of the acquirer of the exclusive right (i.e. return of the exclusive right)
- and damages.

According to paragraph 2 of Article 450 of the Civil Code of the Russian Federation, a violation of the contract by one of the parties is recognized as material, which entails such damage for the other party that it is largely deprived of what it was entitled to count on when concluding the contract.

In cases where the violation is not significant, the copyright holder has the right to demand compensation for losses in full (ie actual damage + lost profits).

Suppose the exclusive right has not yet passed to the acquirer. In this case, if he violates the obligation to pay remuneration within the period established by the agreement, the right holder may:

- cancel the contract unilaterally (out of court)
- and claim compensation for damages caused by the termination of the contract.

These are the general requirements for contracts for the alienation of an exclusive right. At the same time, the relevant sections of the fourth part of the Civil Code of the Russian Federation include special rules governing the specifics of the conclusion of such agreements in relation to exclusive rights to:

- a work as an object of copyright (Article 1285 of the Civil Code of the Russian Federation);
- objects of related rights (Article 1307 of the Civil Code of the Russian Federation);
- an invention, utility model or industrial design (Articles 1365, 1366 of the Civil Code of the Russian Federation);
- selection achievement (art. 1426, 1427 of the Civil Code of the Russian Federation);
- on the topology of an integrated circuit (Article 1458 of the Civil Code of the Russian Federation);
- production secret - know-how (Article 1468 of the Civil Code of the Russian Federation);
- trademark (Article 1488 of the Civil Code of the Russian Federation);
- a single technology (Art. 1547, 1550 of the Civil Code of the Russian Federation).

Please note that it is not allowed to conclude agreements on the alienation of exclusive rights to a company name, commercial designation and appellation of origin. In relation to these IP objects, a ban has also been established on the conclusion of license agreements.

License agreement

The general rules for concluding a license agreement are established by Article 1235 of the Civil Code of the Russian Federation. Thus, the parties to such an agreement are referred to as the licensor (owner of the exclusive right) and the licensee. Under a license agreement, the licensor grants or undertakes to grant the licensee the right to use the IP object. Thus, there is no assignment of exclusive rights and the copyright holder remains the same. Figuratively speaking, the right holder transfers the right to use the IP object “for rent”, while when concluding an agreement on the alienation of an exclusive right, the right holder “sells” his right completely and forever.

Having concluded a license agreement, the licensee will be able to use the IP object only within the limits of those rights and in the ways provided for by the license agreement. In this case, it is not necessary to transfer the right to use in full. You can grant the right to use the IP object in a certain way (for example, print photographs belonging to the licensor in the licensee's brochure), limit the duration of the exclusive right, and / or limit the territory of the use of exclusive rights.

Please note that only the right of use that is expressly specified in the contract is considered transferred. All powers not specified in the agreement remain with the copyright holder (licensor). In the event of a dispute, the arguments of one of the parties that some conditions were implied, but were not spelled out, as well as references to the established practice in the relationship between the parties or business customs will not be taken into account by the court.

In other words, everything that the licensee is not allowed to do under the license agreement is prohibited.

Example 2

A license agreement is concluded in writing and is subject to state registration in the same cases as an agreement on the alienation of exclusive rights. Failure to comply with the written form or the requirement for state registration entails the invalidity of the license agreement.

However, the Civil Code of the Russian Federation provides for the possibility of concluding a license agreement orally. This exception is made for a license agreement on granting the right to use a work in a periodical printed publication (paragraph 2 of article 1286 of the Civil Code of the Russian Federation - publishing license agreement).

The essential terms of the license agreement include:

1. The subject of the contract (can be determined by indicating the IP object, the right to use which is granted under the contract. In this case, it is necessary to indicate the details of the document certifying the right (for example, the number and date of issue of a patent for an invention, a trademark certificate, etc.). 2. Ways of using the IP object 3. Price condition for a onerous contract Just like an agreement on the alienation of an exclusive right, a license agreement can be both paid and free of charge If the contract does not indicate its gratuitous nature, it is automatically recognized as in this case, it will not contain a condition on the amount of remuneration (or the procedure for determining it), the contract will be recognized as not concluded.

The license agreement must specify the territory in which the use of IP objects is allowed. If such a territory is not specified, then the licensee has the right to use them throughout the territory of the Russian Federation.

The period for which a license agreement is concluded cannot exceed the period of validity of the exclusive right to an IP object. If the term is not specified in the contract, then the contract is considered concluded for five years.

Territory and term conditions are not essential. In the absence of these conditions in the contract, the relevant provisions of Article 1235 of the Civil Code of the Russian Federation apply (i.e., unless the parties agree otherwise, it will be considered that the right to use the IP object has been transferred for 5 years with the possibility of use throughout the territory of the Russian Federation).

In case of termination of the exclusive right, the license agreement is terminated regardless of the will of the parties (for example, the expiration of the exclusive right has expired).

Let's say the license agreement has expired. Can a former licensee continue to use a particular IP object? Of course, this should not be done, since in this case there is a violation of the exclusive right, which entails property liability provided for by law or contract. Violation of the exclusive right will also take place if, during the validity of the license agreement, the licensee begins to use the IP object in a way not provided for by the agreement, or outside the rights granted to the licensee under the agreement.

Example 3

So, we have considered the general rules for concluding a license agreement. As in the case of an agreement on the alienation of an exclusive right, special rules for concluding license agreements for certain IP objects apply. This is about:

- objects of copyright (Art. 1286, 1287 of the Civil Code of the Russian Federation);
- objects of related rights (Article 1308);
- inventions, utility models or industrial designs (Articles 1367, 1368 of the Civil Code of the Russian Federation);
- breeding achievements (Art. 1428, 1429 of the Civil Code of the Russian Federation);
- topology of an integrated microcircuit (Article 1459 of the Civil Code of the Russian Federation);
- production secrets - know-how (Article 1469 of the Civil Code of the Russian Federation);
- trademarks (Article 1489 of the Civil Code of the Russian Federation);
- unified technology (Article 1550 of the Civil Code of the Russian Federation).

For example, when concluding a license agreement, the subject of which is the use of a trademark, you need to know that the Civil Code of the Russian Federation provides for two mandatory conditions. Firstly, it is necessary to fix in the contract that the quality of the licensee's goods will not be lower than the quality of the goods produced by the licensor, and, secondly, to provide for the possibility (procedure) for the licensor to exercise control over compliance with the first condition.

For the owners of certain IP objects, the conclusion of a license agreement is one of the main forms of extracting material benefits from the possession of exclusive rights, and in some cases the only way to generate income. For example, the right holder cannot or does not want to independently use the registered trademark and transfers it under a license. As for the acquirer of the license, the conclusion of such an agreement is also extremely beneficial for him, since there is no need to spend his own funds on the development of the required IP object or order such development. And the cost of a license will be cheaper than the full purchase of exclusive rights to an IP object.

Types of license agreements

There are the following types of license agreements:

1. Agreement on granting a simple (non-exclusive) license. The licensee is granted the right to use the IP object with the right holder retaining the right to issue licenses to other persons (subclause 1 clause 1 article 1236 of the Civil Code of the Russian Federation). In this case, the right holder (licensee) may enter into a license agreement with third parties on the same method of using the IP object and on the same territory as provided for in the agreement with the licensor. 2. Agreement on granting an exclusive license. The right holder is deprived of the right to issue licenses to other persons (subclause 2, clause 1, article 1236 of the Civil Code of the Russian Federation). 3. “Mixed” agreement, under which different licenses are “issued” for different ways of using an IP object (Clause 3, Article 1236 of the Civil Code of the Russian Federation). That is, some uses are designed on the basis of a simple (non-exclusive) license, while others are based on the principle of an exclusive license.

The license is assumed to be simple (non-exclusive), unless the contract expressly provides otherwise. However, it is not necessary to use exactly such definitions in the text of the agreement: “simple license”, “non-exclusive license” or their combination “simple (non-exclusive) license”. The main thing is the essence of the contract, namely, the inclusion in it of a condition that the right holder has the right (or no right) to allow the use of the IP object by third parties in the same ways. In the first case, the license is simple (non-exclusive), in the second - exclusive.

Example 4

Suppose an exclusive license has been issued, according to which the licensee has begun to use the IP object. Does the right holder retain the right to use the same object in the same ways? IP specialists divided their opinions on this issue into two camps. Some believed that the copyright holder could do this, others, respectively, that they could not. The point in this dispute was put in the resolution of the Plenums of the Supreme Court of the Russian Federation and the Supreme Arbitration Court of the Russian Federation dated March 26, 2009 No 5/29 “On some issues that arose in connection with the introduction of part four of the Civil Code of the Russian Federation”.

In particular, paragraph 14 of the resolution notes that a license agreement (regardless of the type of such agreement) implies that the right holder retains the right to use the corresponding IP object himself. At the same time, an agreement on an exclusive license may specifically provide that such a right is not reserved for the right holder.

The aforementioned publishing license agreement (Article 1287 of the Civil Code of the Russian Federation) is a peculiar type of license agreements characteristic of objects of copyright. Under this agreement, the publisher (licensor) is granted the right to use the work and, importantly, the obligation to publish this work is assigned to him.

License agreements for computer programs and databases also have their own characteristics. Thus, a license agreement can be concluded by attaching each user to a license agreement, the terms of which are set out on the purchased copy or on the packaging of this copy. The beginning of the use of a computer program or database means the user's consent to the terms of the license agreement.

Performance of the license agreement

It is not enough just to conclude a license agreement, it is necessary to execute it correctly. Thus, a number of requirements for the execution of a license agreement are provided for by Article 1237 of the Civil Code of the Russian Federation.

The licensee is obliged to submit to the right holder reports on the use of IP objects (other provisions may be provided in the contract itself). If such an obligation is included in the agreement, but there are no conditions on the period and procedure for submitting reports, the licensee is obliged to submit reports at the request of the copyright holder.

This obligation is assigned to the licensee, taking into account that the right holder is interested in the proper use of IP objects, since the actions of the licensor can harm both the business reputation of the right holder and his property interests. With the help of timely reports, the right holder will be able to control the actions of the licensee. In addition, such control is also carried out to ensure the right of the right holder to receive remuneration under a license agreement.

Example 5

As for the obligations of the right holder (licensor), during the term of the license agreement, he is obliged to refrain from any actions that could hinder the licensee from exercising the right granted to him to use the IP object within the limits established by the agreement.

Article 1237 of the Civil Code of the Russian Federation contains a number of special rules aimed at protecting the right holders of works of science, literature or art, and the right holders of related rights in case of violations of the license agreement. Thus, if the licensee fails to fulfill the obligation to pay remuneration under the license agreement, these right holders may unilaterally renounce the license agreement and demand compensation for losses caused by the termination of such an agreement.

Is it possible to conclude an agreement on the alienation of an exclusive right if a license agreement has been concluded? Even if a license agreement has been concluded, the right holder has the right to conclude an agreement with a third party on the alienation of an exclusive right, i.e. assign this right to another person. The consent of the licensee is not required. In this case, the copyright holder (licensor) will simply be replaced, but all the conditions of the previously concluded license agreement remain (clause 7 of article 1235 of the Civil Code of the Russian Federation).

At the same time, the right holder must notify the licensee of the conclusion of such an agreement, since if the licensee was not notified in writing about the transfer of rights to another person, then the risk of adverse consequences caused by the new right holder is borne. For example, the licensee was not aware of the change in ownership and did not provide a report to the new owner. In this situation, the actions of the licensee will be recognized as lawful.

Sublicense agreement

Suppose a license agreement has been concluded. Can the licensee enter into another license agreement and grant the right to use the IP object to a third party? Article 1238 of the Civil Code of the Russian Federation confirms that this is possible and calls such an agreement a sublicense (accordingly, the third party will be called a sublicensee).

In general, the rules of the Civil Code of the Russian Federation on a license agreement are applied to the sublicense agreement, taking into account the following features.

The conclusion of a sublicense agreement is possible only with the written consent of the copyright holder (licensor). The possibility of issuing a sublicense can be provided for in the license agreement (as well as a prohibition on issuing). At the same time, the sublicensee may be granted the rights to use the IP object only within the limits of those rights and methods that are provided for by the license agreement for the licensee.

The term of the sublicense agreement may be less than or equal to the term of the license agreement. If the term exceeds the validity period of the license agreement, the sublicense agreement is considered concluded for the duration of the license agreement.

The licensee shall be liable to the licensor for the actions of the sublicensee, unless otherwise provided by the license agreement.

Compulsory license

In a number of cases expressly provided for by the Civil Code of the Russian Federation, at the request of an interested person, he may be granted the right to use an IP object, the exclusive right to which belongs to another person (compulsory license), at the request of an interested person. The right to use is granted on the terms that must be specified in the court decision (Article 1239 of the Civil Code of the Russian Federation).

A compulsory license can only take place in relation to certain results of intellectual activity, but not to means of individualization. This implies that the license in this case is simple (non-exclusive), i.e. the right holder has the right to grant the right to use and conclude contracts with other persons.

The cases of granting a compulsory license are specified in articles 1298, 1362, 1405, 1423 of the Civil Code of the Russian Federation. For example, if an invention, utility model or industrial design is not used or insufficiently used by the patent owner within the time limits provided by law, and this leads to an insufficient supply of the relevant goods, works or services on the market, a non-exclusive license can be compulsorily obtained by any person who is willing and ready to use such an object (clause 1, article 1362).

Other ways of disposing of the exclusive right

Option one: conclusion of other types of contracts

The agreements discussed above are the most common ways of disposing of an exclusive right. However, there are other treaties that provide for the transfer of exclusive rights. For example, an agreement on the pledge of exclusive rights (Clause 5, Article 1233 of the Civil Code of the Russian Federation), an agreement concluded on the basis of an open license (Article 1368 of the Civil Code of the Russian Federation), an agreement on ordering the creation of an IP object (Articles 1288-1290, 1296, 1372, 1431 Civil Code of the Russian Federation).

Option two: transfer of exclusive right without a contract

In some cases, the transfer of an exclusive right to other persons is possible without concluding an agreement with the copyright holder. Such a transition occurs automatically and no remuneration is paid to the copyright holder.

In particular, according to Article 1241 of the Civil Code of the Russian Federation, such a transition is allowed:

1. By way of universal succession. Universal succession takes place in the following cases:

a) inheritance after the death of the right holder citizen,
b) reorganization of a legal entity. According to article 57 of the Civil Code of the Russian Federation, the reorganization of a legal entity can be carried out in the form of a merger, accession, division, separation and transformation.

2. When foreclosing on the property of the right holder. When levying execution on the property of the right holder, the non-contractual transfer of exclusive rights is possible due to the fact that the exclusive (it is also property) right is an integral part of this property. The requirements in accordance with which the recovery should be carried out are contained in the Federal Law of July 21, 1997 No. 119-FZ “On Enforcement Proceedings”. As Article 46 of this Law provides, foreclosure on the debtor's property consists of the seizure of property (inventory), seizure, compulsory license. The order of enforcement actions depends on the category of the debtor (legal or natural person). 3. In other cases provided by law.

Urgent registration for preparation for testing for employment in a highly paid job or to transfer to another position.